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Landmark Judgment targeting Manufacturer of Imitative Pharmaceutical Products

22 Apr 2021

The manufacturer of the popular medicated oil brand “Wong To Yick Wood Lock Oil 黃道益活絡油” received a positive result in favour of protection of the famous product against imitative copycats, all using product names similar to “黃道益” such as “黃道人”,“黃道老人”and “正宗老人“ with packagings designed to be easily confused with packagings used for the genuine product.

In Wong To Yick Wood Lock Ointment Limited v Singapore Medicine Co. & Ors [2021] HKCFI 920Winnie Tam SC led the trial team in an action in passing-off and trade mark infringement under s.18(3) and (4) of the Trade Marks Ordinance (“TMO”) against a group of well-established local medicinal oil manufacturers who advertise themselves as “藥油王國 (Medicinal Oil Empire)”. They are known to own hundreds of own-brand products, but still made and distributed a number of products imitative of the most popular products including “黃道益活絡油” lookalikes. The trial is the first contested trial against a major manufacturer of multiple imitating products of “黃道益活絡油”.

In addition to the product name “黃道益”, the plaintiff relied on a combination of a number of visually significant features distinguishing generations of its evolving packaging to establish a case on get-up passing-off. Defences on the basis that the features identified on the plaintiff’s packagings are common features, and that the contested packagings were independently designed were all rejected. The defendant further asserted that they have commenced use of the contested packagings since before the 1990’s, the evidence in support of which was found to be spurious. The plea of estoppel or acquiescence failed.

Similar facts evidence was admitted by the court, in the form of judgments in other cases, to demonstrate the defendants had a propensity to sell imitative herbal ointments.

In respect of infringement of trade marks, ie a word mark and a packaging mark, the Court concluded that there existed visual, oral and conceptual similarities between the defendants’ various packagings and the plaintiffs registered trade marks, applying the CFA judgment in Tsit Wing (Hong Kong) Co Ltd v TWG Tea Co Pte Ltd (No.2) (2016) 19 HKCFAR 20. The Court applied the global appreciation test and the imperfect recollection test and concluded that the defendants’ various packagings were confusingly similar to the plaintiff’s trade marks. Additionally, the plaintiffs’ marks were held to qualify as “well-known trade marks” under the Trade Marks Ordinance, and were found to have been infringed.